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PCT Checklist

PATENT BOUTIQUE

A few things to think about before filing an International patent application:

Check with your patent attorney whether the PCT route is the best for you.

If, ultimately, you only require patent protection in a small number of territories, then it may well be cheaper, quicker and more efficient to file a small number of national or regional applications instead.

Check the rights to the application and priority have been assigned to the applicant(s) before filing.

This cannot be rectified retroactively.

In territories where the transfer of employee's rights is not automatic, such as the US, a specific assignment, or at least prospective assignment wording in a contract of employment, dated before the filing of the International application is essential.

Ensure all parties that own a priority application at the date of filing the International patent application are named as applicants on that application.

Check that at least one of the applicants satisfies the residency requirements for the receiving office you wish to file at. Likewise, check that your attorneys are competent to act in front of that office. Your attorneys will be able to advise you on these matters.

Getting it wrong may mean you miss the deadline for filing.

Check whether you need a foreign filing licence.

In some jurisdictions it is an offence to file a patent application abroad without first obtaining a licence to do so. This may include the forwarding of the International application to the International Bureau and so can be a risk even if the receiving office was not itself abroad.

If there are going to be joint applicants, decide which applicant is going to be named first on the application.